ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
Under the ICANN Uniform Domain Name Dispute Resolution Policy
1. Parties and Contested Domain Name
The Complainant is Becker & Poliakoff, P.A., the Respondent is Don Isabell and the domain name in dispute is « becker-poliakoff.org. »
2. Procedural history
The electronic version of the Complaint form was filed on-line through eResolution’s Website on June 4, 2001. The hardcopy of the Complaint Form and annexes were received on June 11, 2001. Payment was received on June 4, 2001.
Upon receiving all the required information, eResolution’s clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar’s Whois Database and confirm all the essential contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;Verify if the Complaint was administratively compliant.
This inquiry lead the Clerk of eResolution to the following conclusions: the Registrar is Go Daddy Software, the Whois database did not contain all the required contact information, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.
An email was sent to the Registrar by eResolution Clerk’s Office to obtain confirmation and a copy of the Registration Agreement on June 4, 2001. The requested information was received June 8, 2001.
The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy. The Clerk’s Office fulfilled all its responsibilities under Paragraph 2(a) in forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on June 11, 2001. This date is the official commencement date of the administrative proceeding.
Only the emails to the email@example.com were returned ‘undeliverable’. All the faxes were successful.
The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the respondent. According to the Canada Post tracking system, all were delivered.
On July 9, 2001, the Respondent submitted, via eResolution Internet site, his response. The signed version of the response was received on July 6, 2001.
On July 13, 2001, the Clerk’s Office contacted Paul DeCicco, and requested that he acts as panelist in this case.
On July 13, 2001, Paul DeCicco accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On July 18, 2001, the Clerk’s Office contacted Diane Cabell, and requested that she acts as lead panelist in this case.
On July 18, 2001, Diane Cabell accepted to act as lead panelist in this case and filed the necessary Declaration of Independence and Impartiality.
Between July 13, 2001, and July 23, 2001 the Clerk’s Office contacted the 3 panelists that the Respondent had named in the Response and requested that they act in this case. None of them were able to act at this time.
On July 24, 2001, the Clerk’s Office contacted Margaret Chon and requested that she acts as panelist in this case.
On July 26, 2001, Margaret Chon accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On July 27, 2001, the Clerk’s Office forwarded a user name and a password to Diane Cabell, Margaret Chon and Paul DeCicco, allowing them to access the Complaint Form, the Response Form, and the evidence through eResolution’s Automated Docket Management System.
On July 27, 2001, the parties were notified that Diane Cabell, Margaret Chon and Paul DeCicco had been appointed and that a decision was to be, save exceptional circumstances, handed down on August 10, 2001.
3. Factual Backgrounds
Complainant is a law firm with over 30 years of practice. In 1999, Respondent sued a client of Complainant’s firm. On April 9, 2001, Respondent registered the disputed domain and on April 14 sent a letter to Complainant alleging various acts of wrongful conduct on the part of the law firm and its personnel. The letter demanded the production of certain documents, and closed with the following paragraphs:
“Through your television appearances, speaking activities, website and newspaper columns you and your firm have held yourselves out to be public figures. That makes you fair game for satire and ridicule on my new website, www.becker-poliakoff.org. For the moment, I envision a caricature of a Gross Person, dressed in drag, riding on the rear of a Harley, Bitch to the Porno Kings. But that’s just a thought. Things can change.
You have ten days to respond and provide me with the information I have requested, as well as any explanation you care to offer.
And while you ponder all of this, keep this thought in mind. I’m just a simple guy who has absolutely nothing to lose.”
4. Parties' Contentions
Complainant alleges that the letter is a blatant effort to threaten, harass and extort the Firm and that Respondent registered the domain in bad faith as defined in Section 4(b)(iii) “primarily for the purpose of disrupting the business of a competitor.” Complainant urges the panel to use the common dictionary definition of competitor as that of “one who competes against another, as in sports: RIVAL.” Since the parties were once on opposing sides of a lawsuit and may be again, Complainant believes that the term is applicable here.Respondent points out that he is not an attorney and has never practiced law; therefore he is not a competitor of the Complainant in the commercial sense. He affirms his right to use the site for « cybergriping ” which he defines as non-commercial criticism of the Complainant. He cites Ahmanson Land Company v. Save Open Space and Electronic Imaging Systems, D2000-08586.3 and Bridgestone/Firestone, Inc. v. Jack Myers, D2000-0190 (July 9, 2000) as recognizing a legitimate interest in such speech. Respondent then supplies specific details of his complaints.
5. Discussions and Findings
ICANN UDRP Paragraph 4(a)(i) requires that the Complainant have rights in a trademark or service mark. Several decisions under ICANN's UDRP have found that this paragraph covers unregistered as well as registered trademarks. See, e.g., MathForum.com, LLC v. Weiguang Huang, WIPO Case No. D2000-0743 (quoting The British Broadcasting Corporation v. Jaime Renteria (WIPO Case No. D2000- 0050, March 23, 2000) "This Administrative Panel acknowledges that the Uniform Policy in paragraph 4(a)(i) refers merely to a 'trademark or service mark' in which the Complainant has rights, and in particular does not expressly limit the application of the Uniform Policy to a registered trademark or service mark of the Complainant. Further, this Administrative Panel recognizes that the WIPO Final Report on the Internet Domain Name Process (the Management of Internet Names and Addresses: Intellectual Property Issues, April 1999), from which the Uniform Policy is derived, does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names. It is therefore open to conclude that the Uniform Policy is applicable to unregistered trademarks and service marks."). Based on these non-binding precedents, as well as our own interpretation of the open-ended language of Paragraph 4(a)(i), we find rights protectable under the UDRP can extend to unregistered (or common law) trademarks or service marks.
Complainant has no registered mark, but alleges common law rights based on 30 years of use and an international practice. A sample newsletter was supplied as evidence of the use of the mark to label Complainant’s services. Both parties supplied evidence of the rarity of these particular names in the field of law, which supports an inference of distinctiveness. The panel therefore finds that there is sufficient evidence to support the existence of a common law mark in the name « Becker & Poliakoff. »
The domain name is confusingly similar to the mark.
The complaint alleges that the letter is an effort to threaten and harass the Complainant and is part of a plan to disrupt a competitor’s business, which is an example of bad faith in Section 4(b)(iii). Complainant’s argument that the term “competitor” should be broadly defined to include opposing parties in a lawsuit is a clever one. Unfortunately, it is not consistent with the purpose of the UDRP, which was drafted to resolve a narrow species of trademark disputes. This panel is not disposed to substitute novel definitions that would extend trademark rights beyond current boundaries. Trademark rights are only protected from unfair trade practices and other commercial competition. McCarthy on Trademarks and Unfair Competition § 24:97.2 (4th ed.). The examples of bad faith in the UDRP are all concerned with commercial actions. Non-commercial uses are specifically protected in Section 4(c)(iii). The panel does not find that the parties are commercial competitors within the meaning of the UDRP, therefore we do not support Complainant’s argument under 4(b)(iii).
None of the other 4(b) examples of bad faith are present in this case: there is no offer to sell the domain as in (b)(i), the mark owner already has domain names that correspond to its mark (b)(ii), and no evidence has been presented of any use that would attract or mislead consumers (b)(iv).
Section 4(a) of the Policy requires complainants to prove three elements: mark rights and similarity to the domain name, bad faith use and registration, and a lack of right or legitimate interest. As the complainant has failed to establish bad faith, the panel is in agreement that the Complaint fails entirely.
Right or Legitimate Interest:
A majority of the panel would go further and hold that Respondent has established a right or legitimate interest in the domain name under Section 4(c)(iii) which reads:
you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.The Respondent claims that he registered the site in order to post his criticisms about the Complainant’s alleged unethical behavior. These complaints are outlined at length in the Response and many of them are itemized in the April 14 letter to the Complainant. Although the line can be a difficult one to draw, the majority of this panel would not categorize the letter as evidence of an intent to tarnish the mark owner. They view it as a legitimate right criticize a commercial service. Bridgestone/Firestone, Inc. v. Jack Myers, D2000-0190 (July 9, 2000).
Complainant has not proven bad faith. The domain name registration remains with the Respondent.